A Step Ahead in the Protection of SICLD

29 August 2012

India is known for its software supremacy in the world; it is welcome trend that India’s capability in hardware designing is fast-increasing. Hence, the importance of IPR protection in this field is gaining prominence. With growing technology and development, the semiconductor integrated circuit became an integral part of every automated system and computer chip necessitating a new branch in the field of intellectual property.

Existing forms of intellectual property rights are not considered to be adequate in protecting integrated circuit layouts. Integrated circuits comprise of numerous building blocks, each block being patentable. Since an integrated circuit contains hundreds or thousands of semiconductor devices, a claim to an integrated circuit would have to cover hundreds or thousands of individual elements. Consequently, a patent claim that attempts to describe an entire integrated circuit may be hundreds of pages long. Such a narrow claim would provide almost no protection. Integrated circuits are not easily describable in a patent specification or the claims. The cumbersome, time-consuming nature of making an application combined with extremely narrow protection often makes patent law an insufficient form of protection for integrated circuits.

Other forms of existing intellectual property protection are also inapplicable to integrated circuit layouts. Design patents protect the ornamental, but not the functional, aspects of an article of manufacture described in its drawings. Since an integrated circuit layout is more functional than ornamental, design patent protection is generally inapplicable to integrated circuits.

The Government of India has given effect to Section 6 in Part II of the TRIPS Agreement relating to Layout-Design (Topographies) of Integrated Circuits by enacting the Semiconductor Integrated Circuits Layout-Design (SICLD) Act, 2000 to provide for the protection of semiconductor integrated circuits layout designs. The SICLD Act was published on September 4, 2000. The rules under the Act were published on December 11, 2001. The Act is being implemented in stages; Sections 3 and 5 have been brought to force on May 1, 2004. India has further progressed by making the Semiconductor Integrated Circuits Layout-Design Registry operational from May 1, 2011.

This Act provides protection for layout designs of semiconductor integrated circuits. As per the Act, “layout-design” is defined as layout of transistors and other circuitry elements and includes lead wires connecting such elements and expressed in any manner in a semiconductor integrated circuit. The semiconductor integrated circuit is defined as a product having transistors and other circuitry elements which are inseparably formed on a semiconducting material or an insulating material or inside the semiconductor material and designed to perform an electronic circuitry function.

It is worth mentioning that only the layout-design, which essentially is the floor planning of integrated circuits, can be registered under the SICLD Act 2000, and other information such as any idea, procedure, process, system, programme stored in the integrated circuit, method of operation, etc. cannot be protected under the Act.

The protection is offered to only the layout-designs that are original or inherently distinctive or inherently capable of being distinguishable from any other registered layout design which are not commercially exploited anywhere in India or convention/reciprocal country for more than two years (Section 7 of the Act) can be registered under the Act.

Any person may, within three months from the date of the advertisement give notice in writing in the prescribed manner to the Registrar of opposition to the registration.

The registration of a layout-design shall, if valid, give to the registered proprietor of layout-design the exclusive right to the use of the layoutdesign and to obtain relief in respect of infringement in the manner provided by the Act.

Section 19 of the Semiconductor Integrated Circuits Layout-Design Act, 2000 specifies that registration of a semiconductor integrated circuit layoutdesign is “prima facie evidence” of its validity. Therefore, a layout design, even if it is original within the meaning of Section 7(2), has to be registered under the Act to get adequate protection. Without registration, proving originality in case of a dispute becomes an onerous task.

The highlights of the law are:

• Jurisdiction to the whole of India.

• Defined registration process for the protection of semiconductor integrated circuits layout and designs.

• Protection period of 10 years.

• Provisions regarding infringement and evidence of validity.

• Provisions for treatment of royalty.

• Penalties for willful infringement in the form of imprisonment and fine, and other offences in the Act.

• The Appellate Board for facilitating the legal objective.

The law provides comprehensive protection to the layout designs of semiconductor integrated circuits as recognized intellectual property and provides the bundle of rights to the proprietor of the registered layout design. The SICLD Act fulfills India’s obligation under the TRIPS agreement. As the number of Indian companies focusing on integrated circuit designs is growing, it is important that the country boosts a strong protection policy such as that provided by the SICLD Act.

Krishna & Saurastri

K.K. Chambers, 1st Floor,

Sir P.T. Marg, Fort,

Mumbai 400 001, India

T: +91 22 2200 6322

F: +91 22 2200 6326

E: info@krishnaandsaurastri.com

W: www.krishnaandsaurastri.com

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